Appeal No. 2002-2266 Page 8
Application No. 09/366,477
Once a prima facie case of obviousness is established, the burden of coming forward
with evidence and argument in rebuttal is shifted to Appellants. See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Rebuttal may take the form of a comparison
with the prior art showing that any differences are not merely normal expected variations but
would have been unexpected by those of ordinary skill in the art. See In re Mayne, 104 F.3d
1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997); In re Freeman, 474 F.2d 1318, 1324, 177
USPQ 139, 143 (CCPA 1973).
Appellants argue that the transfer of the hydrogenated metal to the downstream process
step leads to an unexpected advantage in that xylene losses are reduced (Brief at p. 9).
Appellants point to no objective evidence nor any statement in the specification indicating that
the reduction in xylene loss was unexpected. The assertion is merely an attorney argument and
such cannot take the place of evidence. In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972). The evidence, on balance, supports the conclusion of obviousness.
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